*2 GAJARSA, Circuit Judges. NEWMAN,
PAULINE Judge. Circuit Nephew, Smith & Hay- Inc. and John O. hurst, N”) (together appeal M.D. “S & legs to of the edges the outer urges ber States United summary judgment the hole. within upon the bone Oregon, bear the District Court District edges outer infringe, With Ethicon, Inc. did holding that ap- any tension in- upon bearing contribute infringement, induce *3 sharp 82 No. causes Patent to the suture plied States of United fringement “An- to secure into the bone (“the dig entitled to patent”) edges 87 '557 5,601,557 hole. We within Tissue.” Manipulating member choring and the anchor remand to the bone summary dig and into judgment 88 also The vacate barbs effect of proceedings. anchoring supplement for further legs 86. is
BACKGROUND member Preferably, the anchor positioned is within so that when sized ’ kinds of two composed are Bones are hole, edges the outer thin, out- harder relatively bony tissue —a layer relatively bone dense a beneath a softer “cortical bone” called er shell bone, the surface located at is “cancellous called material inner bone As a layer. the cortical known as and is ato is directed patent '557 The bone.” (in conjunc- result, in the suture tension a within bone a affixing suture method force of resilient the intrinsic tion with resil- having inserting suture a leg that forces the member the anchor into bone. a hole drilled legs into ient lodge edges to apart) tends edges place into pushed is the anchor After beneath member the anchor automatically expand resilient the anchor rendering layer, cortical the suture. bone, anchoring cancellous from substantially irremovable member that “Whenever states specification the hole. suture, ends of applied is tension re- and resist bone into the legs dig Patent, 42-60. Claim col. lines '557 from member the anchor moval claim, follows: the broadest in the illustrated The invention is hole.” anchoring method 1. A as follows: '557 suture, compris- attached steps of: ing the bone; in the forming a hole member; to a attaching a suture the hole member within lodging attached with by pressing hole; and into the suture suture so attaching tissue against the bone. is the tissue secured explains: the su- tug on Surgeons are instructed into the pressed is the anchor ture after the needle from expelled Once securely seated. it is assure mem- the anchor hole, the resilience 17, 1999). Inc., 1938857(D.Ore. Ethicon, Dec. No. v. Nephew, Inc. 1. Smith U.S.P.Q.2d 1888, 98-76-MA, WL secure, After is the suture is the surgeon’s pull, and thus is not “lodged” tissue, damaged used re-attach manipulation. such without this Ethicon states tendon, ligament so that it that the movement of its anchor averages placed during healing. 1.1 to 1.8 millimeters. The amount of movement of the Ethicon anchor was dis- suture, The Ethicon bearing puted, & stating N the Ethicon below, pictured pressed is also through a tests used degraded pig bone and involved needle into a hole drilled in the bone: application of excessive force.
The district court referred the claim *4 construction issues to a magistrate judge, who construed the “lodging the member” term as follows: phrase requires This that the mem- ber, pressed once hole, into the may not be However, removed.* phrase this require the member be Ethicon states pressed that instead of when hole, the resilient immovable into the nor spreading preclude of does it the & N S movement after or ma- nipulation bone, lodging. Therefore, after enters the the Ethicon once the member is pressed anchor has two or into four or “arcs” that hole, manipulation occur, some may spread are by but manipulation bone manipulation beyond pressing must by the surgeon, who legs by “sets” the necessary be in order to secure the pulling suture, backward on the causing member in the hole. The further move- spread prevent and to further ment that permitted, is but not required, movement. S & disputes N this mecha- may may not result in the device nism, stating that the Ethicon legs are being even securely more lodged in the resilient and shape recover their when ex- instance, bone. For tension on the su- pelled from the needle. may, ture configurations some result Ethicon summary moved for judgment in further portion deformation of the of noninfringement ground on that the the device in layer the cancellous setting action assertedly required for its bone resulting in an even more secure anchor, whereby surgeon pulls on the placement is, of the key device. The spread suture to the arcs of the anchor however, may that this make the device bone, and drive them into the avoids in- even harder to remove from the fringement construed claims. is required keep it within the argued Ethicon “lodging clause bone. within the hole pressing Upon clarification, Ethicon’s motion for the member with attached suture into the judge the magistrate following added the hole” limits the '557 claims to a method sentence, footnote to the first at the aster- wherein the anchor is permanently and isk: fixedly embedded upon being * hole, pressed into the any without further Therefore, “lodged” means that the manipulation or movement. Ethicon stat- ready is device to secure tissue to the that its ed “significantly” moves on bone. underlying issues nation of fact-based explana- no provided judge magistrate scope, without footnote, parties debate legal and the conclusion
tion foot- that the rulings states district meaning. deference an- all movement Technologies, means that v. FAS Cybor Corp. note court. pressed it is after is excluded 1448, 1456, USPQ2d chor Inc., is not that moves hole, an anchor since banc). (Fed.Cir.1998) (en 1169, 1174 bone,” and tissue “ready secure was decid- infringement, which question of accordingly. limited S is the claim summary judg- motion for on ed Ethicon’s interpretation contra- N states that on the ment, for correctness is reviewed magis- statements the several dicts court, drawing the district record before requirement there is judge trate in favor of the inferences all reasonable immediately immovable that the anchor & N. non-movant S magis- inserted, stressing the it is after statement judge’s explicit trate the district & N states that ma- preclude movement claim “does not incorrect, construction court’s claim lodging.” nipulation after magistrate from the it departed *5 magis- accepted the court The district that the claim construction judge’s correct construction, accept- also but trate’s claim manipu movement or preclude “does not the “lodging the that Ethicon’s view ed points N out lodging.” S & lation after 1 re- of claim by pressing” rejected Ethi judge magistrate that pulled not need that quires an anchor that no fur construction requested con’s is at- the suture surgeon before by the manipulation an movement or ther if ruled that The court tissue. tached to by the claim. S N permitted is chor required, there is the anchor pulling to set it is whether that irrelevant also states district infringement. not be can of manipulation movement or further “in absence of that court concluded bone, for that anchor occurs within that some evidence in the claim. limitation included is fact, is, in suture anchor pressure to the district court argues that the Thus S & N from there is evidence step, needless barring as construing the claim erred conclude juror could which a reasonable manipulation of the an any movement accused suture using the surgeons that the anchor has surgeon after by chor patent.” directly infringe anchors in the bone. inserted been that in the concluded court The district ready suture is Ethicon method judge magistrate that the We conclude pressed is tissue when secure in claim 1 the term ruled subsequent hole, only after into the but the hole member within “lodging the claim con- step. On this pulling/seating attached suture member with pressing the granted sum- struction, court the district surgeon’s not bar into the does hole” both non-infringement, mary judgment movement ensuing small tug and equiva- the doctrine literal under The claim con- insertion. after lents. “lodging” means correct that was struction not be after can withdrawn that the anchor DISCUSSION hole, and that “fur- pressed it is I permitted, but not ... is ther movement pre- required.” This construction is reviewed construction Claim whereby surgeon tugs clude the action law, including de novo determi- a matter of on the suture after insertion. Both sides be by manipulation. extended In the agreed any prudent surgeon would Freedland method surgeon uses for- an assure that ceps seated within the on a pull cord that extends through bone structure. In tube, the S & N method the opening the Freedland fastener pull on the anchor tests umbrella, whether it is like an thereby pinning itself lodged, because legs automatically inside the hole in the bone and stabilizing spread into layer bone; the cancellous against the bone while movement the frac- pull confirms ture have heals. spread. There was evidence before the During prosecution of the '557 district court that sides issue both instruc- inventor, Hayhurst, Dr. argued that a tions that surgeons perform should such a difference between his invention and that pulling step. of Freedland is that the '557 anchor is anchor,
The Ethicon according to Ethi- securely upon embedded simply pressing it con, is not lodged until after the into the hole where it into resiles the can- pulls suture, on the stating Ethicon cellous and that manipu- no further ensuing is the through movement the bone lation of the anchor is necessary. At his spreads the legs, and that without deposition Hayhurst Dr. repeated this de- manipulation the Ethicon anchor scription is not of how his invention works. “lodg[ed] within the hole” as set forth Ethicon states that the inventor thus dis- claim 1. & disputes S N this view of the claimed coverage of its anchor that re- method, and also argues quires that even manipulation to move it place if a pulling step necessary were to lodge open legs. responds S & N *6 anchor, the Ethicon the claims infring- are the Ethicon anchor does require such ed all because of claim steps per- manipulation, are and that surgeon’s “pull” formed, whether or not this pull- additional on both the '557 anchor and the Ethicon step ing performed. is also they pushed after are into the hole
is not Freedland-type manipulation a to Ethicon argues that also S N is open fracture, a closed device in a but a estopped from a claim construction cover cautionary routine safeguard to assure a method ing requires employs place the anchor is in in the bone. S manipulation or movement of the anchor & N states that the '557 inventor did not it pressed hole, after is pointing to procedure disclaim his own which included arguments during prosecution made of the this safeguard of anchor, on the pulling patent '557 a overcome reference to Hayhurst Dr. merely distin- correct, Freedland. is partly Ethicon for guished Freedland’s elaborate manipu- arises, estoppel but not to the pro extent opens lation that an umbrella-like fastener posed by Ethicon. The Freedland refer inside a fractured bone.
ence a shows fastener inserted into a hole
drilled into a fracture; broken bone at the agree magistrate We with the fastener anchor, serves not as a judge claims, suture that the '557 correctly con but as a device holding strued, for the fracture neither require exclude nor a sur together during healing. The geon’s tug Freedland to assure that the anchor is set fastener has project arms that the within cancellous and do not cancellous bone preclude tissue the area of the a small as a movement result of fracture, but the arms of the fastener must A tug. interpretation
1310 into the hole with inserting the member practice reasonable exclude would such that oriented rarely patent “is taught in the the method hole lodges within the member an inter such interpretation; the correct any manipulation absence persuasive evi- highly requires pretation inserting the mem- Co. v. Mfg. support.” Modine dentiary into the hole. ber Comm’n, 75 Trade Int'l States United USPQ2d F.3d that S & claim 6 shows Ethicon states that (Fed.Cir.1996). manipulation N’s invention excludes anchor, while S after insertion sort assertion its Ethicon is incorrect a this claim describes states that & N (sometimes called step pulling a that since embodiment, in accordance with preferred “necessary” to set step) “tensioning” is This differentiation. the doctrine of claim on anchor, pulling sep- presumption that reflects the doctrine in the '557 included must be scope. See are of different arate claims ed.) infring (6th to be for claims claims in order Practice Irving Kayton, Patent adopted (1995): 3.1, in dissent has colleague Our 3.3 ed. hold and would argument, Ethieon’s [Pjatent typically draft practitioners anchor is on the tugging since approximating spec- series of claims claims, claims '557 in the stated protection.... first trum of However, are infringed. can not be may made a claim way which are steps thereof all of the infringed when adding a limitation to narrower itself is unless invention performed, element. form of an additional in the steps. The of additional the elimination reading claim 6 discern basis We prosecution specification, patent, countermanding claim construction summary testimony in the history, and judge “[does that claim magistrate clear that the make
judgment proceeding, manipulation preclude movement not] the an tug on surgeons instruction lodging.” after prudent a matter of using it is chor before court’s claim confirm the district We of claim not a limitation practice, surgical *7 construction, or clari- with the modification 1. nor 1 excludes that claim neither fication pulling on the suture requires the 6 of the point to claim parties Both However, we also after it is inserted. the limitation patent, includes '557 which that construction the claim confirm “manipulated”: is not that the anchor whereby a device claims do not cover a anchoring in bone A 6. method manipulat- necessarily be must the suture suture, compris- member and attached in order through the bone ed and moved ing steps of: legs, S spread for open the anchor and history prosecution estopped by is& N having a providing deformable ma- that must be covering from device “D”; a width dimension fix in in it opened order nipulated member; attaching a suture to However, that device resiles the bone. in a manner ma- may in a be forming a hole the bone after insertion into be- “manipulation that is provided a diameter nipulated that the hole has such necessary in order pressing not] yond [is dimension greater than the width in the hole.” to secure “D”; and
13H
II
performed
be
practice
in
of an invention.
See, e.g., Moleculon
Corp.,
Research
793
signal
steps
that additional
1271,
(method
F.2d at
USPQ
229
at 812
may
performed
in carrying out a
practiced can
steps
include
in addition to
claimed method is
“comprising.”
the word
claim).
those
in
Technologies,
See Vivid
Inc. v.
stated
Infringement
American
Inc.,
795,
Engineering,
Science &
200
arises
F.3d
when all of the
of a
steps
claimed
811,
1289,
(Fed.Cir.1999)
USPQ2d
53
1301
performed,
method are
whether or not the
(the signal “comprising”
“generally
un
infringer
performs
also
steps.
additional
derstood to
signify
the claims do not See, e.g., Vivid Technologies, 200 F.3d at
presence
exclude the
in
appa
the accused
(inclusion
USPQ2d
53
at 1301
of steps
ratus
method of factors in addition to in addition to those
in
stated
the claim
recited”);
explicitly
those
Moleculon Re
infringement);
avoid
Stiftung v.
CBS, Inc.,
Corp.
search
v.
PLC,
1173, 1178,
945
Renishaw
F.2d
20
(Fed.Cir.1986)
USPQ 805,
229
812
USPQ2d 1094,
(Fed.Cir.1991) (claim
(stating
general
“the
proposition that an
using “comprising” reads on devices which
accused method does
literally
not avoid
elements).
add additional
This court did
infringing a
having
method
the tran
Baker, Inc.,
not hold in Maxwell v. J.
(or
phrase
comprises’
sitional
‘which
‘com
1098, USPQ2d
(Fed.Cir.1996)
F.3d
prising’) simply
employs
because
addi
all
procedures
unless
disclosed
are
steps”).
tional
colleague
Our esteemed
claim,
included
patentee
has
dissent criticizes use of
signal
“com
public”
“dedicated
un
prising,” calling it a “weasel word” to
claimed procedures but the entire claimed
precision
somehow avoid
in claiming. This
process.
dissent,
colleague
Our
finding
signal
appears
nonetheless
in the vast ma
disputed
fact that Ethicon’s method
jority
patent claims,
implements
for it
“indisputably requires
‘tensioning1
principle
that claims are intended to
step,”
provide
proposes
concise
requires
statement of the
Maxwell
claimed
distinguished
invention as
from what
not including
tensioning
has
step in the
before;
gone
a claim is not a
claims,
handbook
& N dedicated
public any
practice
Hayhurst’s
Dr.
invention.
procedure in
which that
is included.
testimony and
that any pru
instructions
However, Maxwell does not treat such a
dent
would test
the anchor to
situation. The issue in Maxwell was
lodged
assure that it is
beneath the corti
equivalent subject
whether
matter
layer
cal
was
in any
not included
claim. was
disclosed
but not
required
Nor was it
to be claimed.
It is
claimed can be reached under the doctrine
neither a “shortcoming” nor a “weaseling”
*8
equivalents.2
There
no
was
issue in
to use “comprising” to recognize
in
Maxwell of
infringement
literal
when ev
may
practiced
ventions
steps
with
ery step of the claimed method is in fact
to
addition
those listed in the claims.
practiced by
infringer.
the
In
accused
A claim
equivalent
is not defective
Maxwell
the accused
subject
when it
steps
states fewer than
may
all
the
matter
patent
was disclosed
the
but was
question
being
2. This
considered
patentee
is
this
what
rely upon
circumstances a
can
banc,
court en
in Johnson & Johnston Associ-
equivalents
respect
doctrine
with
to
ates Inc. v. R.E. Service Co. See
1313 simply step public. ordinary dedicated that skill in the industry” “shoe would (Ethicon) public A member of the so used conclude that the failure to claim the dis- it. & N cannot now recover what it had closed “alternate sys- shoe attachment previously dedicated. I must dissent. patentee tems” meant the there had sim-
ply systems “dedicated the use of such public.” the Accordingly, Id. we held that I. complaint for literal infringement or for Baker, Inc., . In Maxwell v. J. “we reiter infringement by equivalents could lie. Id. ‘subject ated the rule well-established So too does the apply rule here. Like matter disclosed pat but not claimed in a device, ” Ethicon’s accused method and application ent is dedicated to public.’ patent’s “Summary of the Invention” (Fed. 1098, Cir.1996) 86 F.3d 1106-07 and its “Description of Preferred Embodi- Brown, (quoting Unique Concepts, Inc. v. ments” both disclose embodiments that (Fed.Cir.1991) 1558, 939 F.2d 1562-63 need to applied have “tension to the [an- Co., citing Bridgeport Miller v. Brass 104 chor suture” in member’s] order to have 350, 352, (1881)). U.S. L.Ed. 783 This the “ends of [anchor member’s] rule, held, prohibited we a finding both of dig into the bone and resist removal of the infringement literal infringement and of anchor member from the hole” drilled into because, under equivalents the doctrine of (See, 150, 3, the bone. e.g., J.A. Col. Lines otherwise, an applicant “present could 1-6; 9, (“With see also Col. Lines 45-49 broad disclosure in of the the outer edges bearing upon application claims,” and file narrow there bone, any applied tension to the suture by “avoiding examination of broader claims causes the sharp edges ... dig into the applicant could have filed consis bone to secure the anchor member within specification.” tent with the Id. at 1107 hole.”).) But any nowhere do Genentech, (citing Inc. v. Wellcome Found. claims themselves step “ap- recite a about Ltd., 1555, (Fed.Cir.1994); 29 F.3d plying tension to the suture” order to International Corp. Visual v. Crown Met have the claimed anchor member’s dig Co., 768, (Fed.Cir. Mfg. al (See into the generally bone. J.A. 1993)). addition, In comports the rule 12.) Col. and Col. (among principles) with other statutory requirement distinctly claiming contrary, To the one of the asserted “ ‘subject applicant matter which the re expressly ap- disclaims ” gards as his (quoting invention.’ Id. 35 plying expand tension to legs. the anchor’s 112). § U.S.C. Claim 6—a claim directed at when, here, claimed method one needs
Applying the dedication-to-the-public to set the member inside the bone—claims rule, we pat- determined that because the of “inserting the [anchor] member disclosed, entee there had merely but not hole ... claimed, [bone] such that an having “alternative” for lodges within the hole in the ab- “fastening shoe’s ... tabs stitched into the shoes,” any manipulation sence lining seam of patentee had thereby inserting other than deprived the member into the Patent and Trade- (See 17-20) mark considering Office from hole.” J.A. Col. Lines patenta- added). bility words, (emphasis that alternative. Id. at In 1108. one Further, person we reasoned that a practicing the invention need insert *10 lan- And when the patent. portion to have the the hole anchor into
the pres- applying on or about guage tugging dig into the and automatically “resile” in the expressly appears sure to the suture (See id.) bone. pur- for description, it does so the written claims re- independent three other The will or asserting “tug” that a cause pose of less, stating (among other quire more lodge itself the to within help cause to “attaching tissue steps for things) the i.e., bone, tug does more that the tissue is secured that the suture so the lodged anchor is the simply “assure” that (claim 1), “deforming the the bone” against (See, 150, Col. e.g., J.A. within the bone. manner such that in member a [anchor] (“Whenever tension is applied Lines 4-6 against the [expands] resiles the suture, legs dig the ends of to the the (claim 2) “lodging portion of the bone” added); -”) J.A. (emphasis the bone hole the member within [anchor] the (“As result, a Lines 54-60 Col. attached suture pressing the member with (in conjunction with tension the suture (claim 3). “more” But hole” into the force of the anchor intrinsic resilient the (under the claim cannot mean this case leg edges 87 that forces the member 80 doctrine) claims en- that the differentiation lodge edges to 87 of apart) tends step, the entirely new and different gulf an anchor-member beneath cortical suture, “tension” 97, rendering the anchor member layer Trading v. Foods International see Kraft from this hole substantially irremovable (Fed.Cir.2000) Co., 1362, 1368 100.”)) added). (emphasis (“ cannot broaden differentiation ‘[C]laim lan- As even disclosed-but-unclaimed ”) (cita- scope’ beyond correct their claims it, then, S & N’s guage would device have omitted); would to otherwise tions find sur- “require indeed a process would any disclosed but could read we mean anchor is set tug to geon’s assure claim, in dero- alternative into unclaimed bone,” contrary to within the cancellous rule” about gation of our “well-established colleagues’ interpretation. my esteemed Worse, it mean would public dedications. speci- claims or Simply put, nothing below) (as fully more discussed tug suggests that a should fication applicant what could return to court solely to apply to the suture on or tension expressly dis- had also applicant has that the anchor “assure” or “confirm” and even claimed, during prosecution both again, But lodged in bone. become merely should litigation. later Courts “tensioning” any say nothing of claim, in a used give effect to the words reason, resiliency leaving it them. re-write or even resurrect necessary “lodg- complete alone that the '557 majority states ing” step. tug on the ... “[s]urgeons instructs pressed after the anchor suture II. securely seated.” that it is to assure identify whether opinion its have majority
But
indicates
I
also
claims, analysis
in the
appears
instruction
misapplied
public-dedication
Maxwell,
portion of
description
any
though
review
written
and misread
event,
(contrary
in-
col-
my
In
specification.
that decision shows
assertion)
Maxwell,
pre-
leagues’
in the
certainly
appear
struction
does
equal
progeny apply with
claims,
decessors and its
most critical
language
*11
1315
involving infringement
jority implies
applicants may
force to situations
now
by
avoid the
infringement.
simply including
literal
Maxwell bar
by equivalents and
(“We
every
in
claim the term “comprising,” as if
E.g.,
frequently
J.A. Col. Lines Cir.2000). non-moving party, The more confirms this The extrinsic over, summary judgment evidence cannot defeat inventor, reading patent. dispute of the '557 simply by insisting genuine deposition at his Hayhurst, by proffering Dr. some evi admitted exists or even 1, dence; case, party practicing non-moving that one would the ulti party if this bears patent (provided or 6 of the '557 one had here) & N proof, mate as with S manipulation of the burden perform any “further that a reasonable unsecured anchor would result in failed produce must evidence prove, e.g., surgeries. advertising jury could find materials sufficient contains all the S & N did offer still do nothing change the accused device For thing, limitations set forth claims. conclusion. one Care, materials, Hoffinger they Zodiac Pool Inc. v. itself did not draft these so See (Fed. Inc., Indus., necessarily 1414-15 do not even a party- constitute Cir.2000) admission, (affirming summary judgment opponent on a damaging let alone *13 infringement when no And alleging say literal admission. these advertisements find, other, juror nothing, way reasonable could based on the one or the about hav- presented, ing apply that evidence the accused de tension to Ethicon’s suture. juror all limitations set forth No vices contained the reasonable would take those ad- invention); also the claimed see Vehicu vertisements and somehow convert their Corp., Tech. at 1382. into an lar F.3d silence admission that contradicts express the that instructions Ethicon itself beyond The record here establishes rea- drafted. Nor should we. that, invention, son unlike the claimed last, I require inapplicable accused method does the addition- And find our rule that an step tensioning infringe al the suture order to accused device will fix the anchor within the hole and to long bone claimed invention so as that device thereby “ready” make it for the attach- contains all the limitations claimed patent, if merely ment of tissue. S & N has not identified even the device adds any reasonably steps discussed, evidence could rebut more or features. As packaging patent emphasizes importance instructions that Ethicon in- '557 anchor, every having legs, resiliency cluded instructions that resilient with since (i.e., surgeons pull apply lodge direct back on enables the claimed invention to it to) ready “tension” the anchor in order to self within the bone as soon as the anchor (S soft, product layer. it for tissue attachment. & N’s enters the cancellous But as instructions, shows, by majority, mentioned do the the accused device evidence automatically not factor into either the claims construc- does not have kick- infringement analysis. thereby lodge exam- out and tion or We or resile bone; using primarily merely ine the former the intrinsic within the so rather claims, and, specification adding or feature to the invention evidence—the evidence, history; by patent, if in the accused prosecution claimed simply does not contain that or the rare case we will resort extrinsic device i.e., all, by examine ana- at not contain all evidence. We the latter feature does See, lyzing by patent. whether the accused device contains the elements claimed by patent e.g., Corp. all the limitations claimed at Vehicular Tech. v. Titan Wheel (Fed.Cir. issue.) Int’l, Inc., any Nor did S & N offer evidence F.3d 1998) expert testing (infringement that could exists if all limita rebut the results showing appear, literally that Ethicon’s anchor would move tions of the claim either or outwardly by equivalents, product from the hole absent a in the accused tensioning step. process). however, majority, aside
Equally significant, S & N offered no brushes reasonably that could detailed examination of the evidence evidence rebut parties. Merely showing actually evidence that movement of an offered i.e., fact, resiliency, pointing or even their no additional tension- disputing a material materials, ing step is needed after all. The testimo- advertising should to Ethicoris Hayhurst ny by the inventor Dr. himself summary judgment when no not defeat that, indeed, confirms or other juror that evi- could examine reasonable person practicing the '557 dence and find in S & N’s favor. Because apply need to tension to the suture in decision, I today’s fear we have legs dig to make anchor’s order inadvertently improperly raised the the bone. summary judgment in actions al- bar patent infringement. leging & N has failed to Last, identify any ju- that would lead a reasonable
evidence ror to conclude Ethicoris accused V. literally similarly requires method (other summarize, To automatically its accused anchor also kick- *14 themselves) does disclose entering in out the after the hole applied the need to have “tension” produced in- Again, bone. Ethicon claimed suture order to make the every package structions included with ready for the at- of anchors and these instructions directed claimed surgeons apply tension to the anchor’s tachment of tissue to the bone. But no- addition, produced suture. In ex- actually where do of these claims re- pert testing showing results that a step, meaning has patentee cite this apply needed to this tension in order to set Ethicon, public. dedicated it to the there- tissue; attaching before fore, reasonably could conclude as such otherwise, shows, the unrebutted evidence lawfully and could use that in its pa- surgeries unsuccessful could result and method. accused tients would not heal. “comprising” The use of the term should evidence that S & N did offer change reading patent. Our rebuttal —advertisements drafted precedents have cautioned that while party third lead reasonable —could term, “comprising” open-ended is an it is juror to reach a different outcome. Ethi- recapturing appli- not a tool what the con itself did not draft these advertise- cant had otherwise surrendered. In this nothing ments and in the advertisements case, noted, that, just S & N did dedi- even contradicts Ethicoris instruc- what cating public expert testing tions and results established tension to the anchor member’s suture. beyond genuine dispute. Nor should we allow a “weasel word” like respectfully I dissent. “comprising” nullify public-dedica- rule, precedent. tion well settled our
Further, “lodged” the limitation
“lodging” as used the various claims
excludes the ten- disclosed-but-unclaimed
sioning step. specification repeatedly
refers to the nature of the “resilient”
claimed anchor’s and the claims them-
selves indicate that these will “resile” expand automatically simply because